It is important to know the classes that your product belongs to before submitting a trademark application. Trademark classifications are primarily used to determine the most appropriate classes that a particular product or service falls into when filing an application. It is in these classes that the Trademarks Office uses in identifying trademarks that are confusingly similar. In most countries, including the US, the Nice Classification System is adopted for separating goods and services into distinct groups. While most countries refer to the Nice Classification System, some countries still use their own trademark classification systems. Canada is one of the notable countries that fall into this category. It is only recently that Register trademark in Canada agreed to adopt the Nice Classification System. In fact, Canada hesitated for decades before a parliamentary act was passed to legalize the use and implementation of the Nice Agreement.
Even the International Nice Classification hasn’t taken effect in Canada. Currently, stakeholders in the country are divided over the exact time that the global classification system implementation will take effect. Nonetheless, when the system takes effect, the total fees you will be paying to register a mark will increase, especially if you’re filing for two or more products or services.
The Nice System of Classification is a global system for separating numerous products and services into explicit classes. Therefore, before you submit your trademark application, you will need to determine the most appropriate classes that your products and/or services belong to.
There are distinct merits and demerits in filing one trademark application covering one or more classes or several trademark applications for different classes. The merits include:
- Independent examination of each application (in the case of multiple applications) by the Examiner. So, objections or oppositions raised for one application will not affect other applications.
- Total fees are the same both for filing a single application or multiple applications.
The demerits include:
- When a multiclass application is submitted is submitted, it’s possible for the application to receive a setback if an objection is raised for one class out of many classes.
- The Trade Office issues only one Certificate of Registration for each approved application instead of per class or classes.
Reasons why you have to take advantage of Nice trademark Classification
If you really want to register your trademark in the United States Patent and Trademark Office (USPTO) or Canadian Intellectual Property Office (CIPO), then you have to take advantage of Nice Classification System.
- You may expedite the trademark registration process by selecting a particular class that is appropriate. This is why it’s important that you research very well and be sure that you choose the appropriate class for your product or service. You may consult a professional to assist you with the process.
- You will be able to know and ascertain whether the trademark you’re filing for is confusingly similar to a previously filed or registered trademark. Your application will be registered if it is discovered that the particular mark you want to protect for a specific product or service is closely similar to another trademark in a similar class. Hence, using the Nice Classification System will help you to establish whether you’re not infringing on existing trademarks or being infringed upon.
The type and inherent characteristics of your product or service determine the time it will take you to search for a trademark in order to list your product or service. For example, will coconut oil be included under 003 (cosmetics), 005 (coconut oil for medical purposes) or 029 (food)? In this case, the purpose for which the coconut oil will be used will determine in which class it will fall (3, 5 or 29).